[E-trademarks] Jurisdiction over foreign client accused of TM infringement in the US

[Jessica R. Friedman]

An international registration through WIPO. (I probably should have said Madrid instead.)

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

[1479430908386_PastedImage]


From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Gerry J. Elman via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Wednesday, November 13, 2024 at 11:58 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Gerry J. Elman <gerry at elman.com>, Elman Office - Pratyush/Shashi <Office at elman.com>, jrfriedman at litprolaw.com <jrfriedman at litprolaw.com>
Subject: Re: [E-trademarks] Jurisdiction over foreign client accused of TM infringement in the US
Jessica-

Gee, forgive my stupidity, but I'm not aware of something called a WIPO trademark registration. What am I missing?

-Gerry Elman
Elman IP in Denton, Texas



Sent from my T-Mobile 5G Device


-------- Original message --------
From: "Jessica R. Friedman via E-trademarks" <e-trademarks at oppedahl-lists.com>
Date: 11/13/24 5:44 PM (GMT-06:00)
To: "For trademark practitioners. This is not for laypersons to seek legal advice." <e-trademarks at oppedahl-lists.com>
Cc: "Jessica R. Friedman" <jrfriedman at litproplaw.com>
Subject: [E-trademarks] Jurisdiction over foreign client accused of TM infringement in the US


  *   Client operates and has offices in France. Client uses CLOUD SECURES (hypothetical) to identify its cybersecurity consulting services and has a WIPO registration for that mark for those services. Occasionally Client provides its services to a US company and, in such cases, may work with a US contractor.



  *   USCo provides cybersecurity consulting services in the U.S. under the mark CLOUD. USCo sends Client a c&d letter accusing Client of infringing its CLOUD trademark by allegedly using CLOUD SECURES here in the U.S.


  *   Without Client’s having an office or agent here, is there any basis for USCo to assert jurisdiction over Client here? Could the US contractors that Client uses be considered its agents so as to confer jurisdiction?



  *   Is there any basis for USCo’s suing Client in France for the trademark infringement that USCo claims Client is committing here?

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

[1479430908386_PastedImage]


-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241114/90770c64/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 8892 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241114/90770c64/attachment.png>